Ex Parte Fang et al

Patent Trial and Appeal BoardNov 29, 2012

11606216 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/606,216 11/29/2006 Yuan Fang 006943.00358 6744 66811 7590 11/29/2012 BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER WILLIAMS, LELA ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 11/29/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte Pepsico, Inc. (Inventors: Yuan Fang, John Krulish, and Rod Jendrysik) ____________________ Appeal 2011-007370 Application 11/606,216 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, PETER F. KRATZ and KAREN M. HASTINGS, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007370 Application 11/606,216 2 Pepsico, Inc. (Applicant) appeals an Examiner’s decisions rejecting Claims 1 and 3-13. 35 U.S.C. §§ 6(b) and 134(a). We reverse. The Claimed Subject Matter The claimed invention relates to beverage compositions and the process of making them. The beverage must include two components: (1) gum Arabic, a modified starch or combination of the two (the primary emulsifier) and (2) 0.1% to 0.6 wt. % of plant derived pectin (the secondary emulsifier). The amount of the first component must be 50 to 100 times by weight of the amount of the pectin. Applicant also claims the process of making the beverage. The process has four steps: (1) preparing an intermediate product, (2) adding the first component to the intermediate, (3) adding pectin and (4) post–processing. The pectin is required to be present in an amount of 0.1 – 0.6 weight %. The first component must be added so the amount is 50 to 100 times by weight the amount of pectin. Claims 1 and 13 exemplify the invention: 1. A beverage, comprising: a) a primary emulsifier selected from the group consisting of gum Arabic, modified starch, or a combination thereof; and b) a secondary emulsifier in the amount of about 0.1 wt % to about 0.6 wt %, said secondary emulsifier is an emulsifying pectin derived from a plant, wherein the primary and secondary emulsifiers are present in a ratio of about 100:1 to about 50:1 to provide a stable emulsion, and to produce at least a 2-folds increase in emulsifying capacity over the primary emulsifier alone. 13. A process of preparing a stable beverage, comprising the steps of: a) pre-processing to produce an intermediate product; b) adding a primary emulsifier selected from the group consisting of gum Arabic, modified starch, or a combination thereof; and Appeal 2011-007370 Application 11/606,216 3 c) adding a secondary emulsifier in the amount of about 0.1 wt % to about 0.6 wt %, said secondary emulsifier is an emulsifying pectin; and d) post-processing to produce a stable beverage wherein the primary and secondary emulsifiers are added in a ratio of about 100:1 to about 50:1 to provide a stable emulsion, and to produce at least a 2-folds increase in emulsifying capacity over the primary emulsifier alone. The Rejections The Examiner maintained five rejections in the Answer: 1. Claims 1 and 5-7 under 35 U.S.C. § 103(a) over Kentaro;1 2. Claims 3, 8, and 9 under 35 U.S.C. § 103(a) over the combined teachings of Kentaro and Weibel;2 3. Claim 4 under 35 U.S.C. § 103(a) over the combined teachings of Kentaro and Takahasi;3 4. Claims 10-12 under 35 U.S.C. § 103(a) over the combined teachings of Kentaro and Yuan;4 and 5. Claim 13 under 35 U.S.C. § 103(a) over the combined teachings of Hoersten5 and Kentaro. Analysis Applicant contends that the amount of gum Arabic taught by the references is totally outside the range required by Applicant’s claims. Brief, 9-10 and 14. Applicant correctly points out that the claims require 0.1 wt% to 0.6 wt% pectin and 50 to 100 times that amount of the primary emulsifier. Brief, 9-10 and 13-14. 1 JP 2005-185132. 2 U.S. Patent 5,008,254. 3 U.S. Patent 6,890,578. 4 U.S. Patent Publication 2005/0266138. 5 U.S. Patent 4,988,530. Appeal 2011-007370 Application 11/606,216 4 In other words, Applicant’s claimed beverage must include at least 5% by weight of a primary emulsifier, such as gum Arabic, up to a maximum of 60%. Kentaro describes a beverage composition including 0.05 to 3% by weight of gum Arabic. Kentaro, 3:0011, 4: 0018.6 These values are totally outside the range required by Applicant’s claimed compositions. The amount of gum Arabic in the compositions taught by Kentaro does not overlap with those claimed. Thus, the Examiner’s critical finding that the claimed ranges “overlap or lie inside ranges disclosed by [Kentaro]” (Answer, 4 and 6) is not supported by a preponderance of the evidence. The Examiner’s reliance on In re Woodruff, 919 F.2d 1575 (Fed. Cir.1990) and In re Wertheim, 541 F.2d 257 (CCPA 1976) to support the conclusion of obviousness is, therefore, inappropriate. Where the prior art disclosure suggests the outer limits of a range of suitable values, absent some teaching or reasoning for going outside the range, the use of values outside that range would not have been obvious. See In re Sebek, 465 F.2d 904, 907 (C.C.P.A. 1965). Since all of the rejections rely on the same “overlapping ranges” rationale and no additional reasoning has been provided for modifying the amount of gum Arabic beyond that disclosed in the references, we reverse the rejections of the claims. DECISION The Examiner’s decisions rejecting Claims 1 and 3-13 are reversed. REVERSED bar 6 All citations to Kentaro are to the machine translation of record. Our review of the record did not reveal that an actual translation of Kentaro is present. Because of the relatively poor quality of the machine translation, it is disappointing that neither the Examiner nor Applicant felt it necessary to obtain and provide a more accurate translation of this key reference.